10465166 (B.P.A.I. Dec. 1, 2010)

Ex Parte Feldman et al

Board of Patent Appeals and InterferencesDec 1, 2010

10465166 (B.P.A.I. Dec. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/465,166 06/19/2003 Larry Lee Feldman SLA1219 3538 29397 7590 12/02/2010 LAW OFFICE OF GERALD MALISZEWSKI P.O. BOX 270829 SAN DIEGO, CA 92198-2829 EXAMINER DEBROW, JAMES J ART UNIT PAPER NUMBER 2176 MAIL DATE DELIVERY MODE 12/02/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte LARRY LEE FELDMAN and MARK LIU STEVENS ____________ Appeal 2009-009642 Application 10/465,166 Technology Center 2100 ____________ Before KENNETH W. HAIRSTON, LANCE LEONARD BARRY, and MARC S. HOFF, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. Â§ 41.52, begins to run from the "MAIL DATE" (paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009642 Application 10/465,166 2 STATEMENT OF THE CASE The Patent Examiner rejected claims 1-4, 6, 8-19, 21, and 23-30. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). INVENTION The Appellants describe the invention at issue on appeal as follows. The present invention enhances the production of printed output based on arbitrary sources of input, such as word processors, spreadsheets, photographs, etc. The present invention solution advances two different approaches in the control of a master document header/footer. Generally, the user can either overlay the underlying page, covering up parts, and providing their own text. Or, the user can frame the underlying page, shrinking the complete contents to fit between the master header and footer. (Spec. 3-4.) REPRESENTATIVE CLAIM 1. A method for composing documents comprising: accepting at least one electronically formatted paginated document; converting the documents into a metafile format description; arranging the converted documents in a composing file with images automatically differentiated by logical pages corresponding to the pagination of the converted document; creating edge margins using a function selected from a group consisting of creating a page overlay and resizing an image; and, adding the edge margins to the composing file pages. Appeal 2009-009642 Application 10/465,166 3 REJECTIONS Claims 1-4, 6, 15-19, 21, and 30 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over U.S. Patent Application Pub. No. 2001/0032218 ("Huang") and U.S. Patent No. 6,832,352 ("Dooley"). Claims 8-14 and 23-29 stand rejected under Â§ 103(a) as obvious over Huang, Dooley, and Bruce A. Wallace, Merging and Transformation of Raster Images for Cartoon Animation, Vol. 15, No. 3, ACM, Aug. 1981, pp. 253-62. ("Wallace"). CLAIM GROUPINGS Based on the Appellants' arguments (Reply to Supp. Answer2 2-3 (filed May 5, 2008)) and the dependencies of claims 25, 28, and 29, we will decide the appeal of claims 1-4, 6, 10, 13-19, 21, and 30 on the basis of claim 1 alone and the appeal of claims 8-14 and 23-29 on the basis of claim 8 alone. See 37 C.F.R. Â§ 41.37(c)(1)(vii). CLAIMS 1-4, 6, 10, 13-19, 21, AND 30 The issues before us are whether the Examiner erred (1) in finding that Dooley teaches creating edge margins and adding the edge margins to a document as required by representative claim 1 and (2) in combining teachings of Dooley with those of Huang. 2 Because 37 C.F.R. Â§ 41.41(a) allows only "a single reply brief," we consider the Reply to Supplemental Examiner's Answer in lieu of the original Reply to Examiner's Answer. Appeal 2009-009642 Application 10/465,166 4 FINDINGS OF FACT Huang describes its invention as follows. [T]he present invention is implemented as a method for providing document conversion process, the method comprising . . . converting an unstructured document into a metafile, wherein the metafile including a number of displayable objects and respective decoration attributes about each of the displayable objects, receiving a definition file including [D]ocument [T]ype [D]efinitions (DTD) relating to the unstructured document; [and] generating a modified metafile including association information of at least one of the displayable objects associated with one of the definitions in the definition file . . . . (Â¶ 0013.) "An example of a metafile format is commonly used Portable Data Format (PDF)." (Â¶ 0043.) Dooley describes its invention as "a method of converting a page size of a document from a first size having first dimensions to a second size having second dimensions while maintaining pagination of the document." (Col. 2, ll. 9-12.) ANALYSIS We address the aforementioned issues seriatim. Creating edge margins and adding the edge margins to a document The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). Appeal 2009-009642 Application 10/465,166 5 Here, the Examiner makes the following findings. Dooley . . . expressly teaches that in order to preserve pagination between pages, the computer system of the invention is programmed to alter (modify) the page size and margins of the document so that the document body area has the same document body width and document body length before and after the change in page size (column 5, lines 11- 15). Finally, Dooley expressly teaches calculating new header and new footer margins for defining a resized document page length (col. 7, lines 14-65). (Supp. Ans. 13-14.) The Appellants do not contest these findings. "Silence implies assent." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985). Instead, they make the following argument. Even if the proportional resizing of an existing margin to fit a changed page size can be considered a modification of the margin, this distinction would be irrelevant to the analysis of the claimed invention. The claimed invention recites creating edge margins that are added to a page. That is, the original margins (if any) in the Applicant's document are at least partially covered/replaced by new margins. The claimed invention does not recite modifying or altering a pre-existing margin. (Reply to Supp. Ans. 2.) For its part, the following teachings of Dooley support the Examiner's findings. In order to preserve pagination between page sizes, the computer system 100 of the present invention is programmed to alter the page size and margins of the document so that the document body area has the same document body width and document body length before and after the change in page size. Appeal 2009-009642 Application 10/465,166 6 As a result of maintaining the dimensions of the document body area, the resized document retains the pagination of the original document. (Col. 5, ll. 11-18.) We find that altering the size of the original margins of a document constitutes creating margins of a different size and adding the created margins to the document in place of the original margins. Because the reference creates margins of a different size and adds them to the document, we agree with the Examiner's finding that "[t]hese express teachings in Dooley are the equivalent of the recited 'creating edge margins,' and 'adding the edge margins' to the pages of the document." (Supp. Ans. 14.) Therefore, we conclude that the Examiner did not err in finding that Dooley teaches creating edge margins and adding the edge margins to a document as required by representative claim 1. Combining these teachings of Dooley with those of Huang The Examiner concludes and finds that "at the time of the invention, it would have been obvious to a person of ordinary skill in the art to combine Dooley with Haung [sic] for the benefit of providing a document conversion process that preserves the original document pagination (column 2, lines 45- 47)." (Supp. Ans. 6.) The Appellants argue that "[t]he statement that it would have been obvious to modify Huang in view of Dooley 'for the benefit of providing a document conversion process that preserver the original document pagination' does not explain why a practitioner would seek to combine references . . . ." (Reply to Supp. Ans. 3.) Appeal 2009-009642 Application 10/465,166 7 The presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted). Here, Dooley discloses that the following need existed in the art. In today's global economy, businesses quite commonly have divisions in many different countries and continents. A result of the international scope, a business must deal with differences between countries in which it operates. One such difference is that standard paper sizes differ between countries and continents. Businesses are likely to adopt the paper size of the country in which the business is located . . . . (Col. 1, ll. 11-17.) "Accordingly, there is a need for preserving pagination of a document converted from a first page size (e.g. US Letter) to a second page size (e.g. A4)." (Id. at ll. 56-58.) The same reference also discloses a solution to the need, viz., "a method of converting a page size of a document from a first size having first dimensions to a second size having second dimensions while maintaining pagination of the document." (Col. 2, ll. 9- 12.) We find that the need and a solution thereto disclosed by Dooley would have provided a reason to combine teachings of Dooley and Huang. Therefore, we conclude that the Examiner did not err in combining teachings of Dooley with those of Huang. CLAIMS 8-14 AND 23-29 The issue before us is whether the Examiner erred in combining teachings of Wallace with those of Huang and Dooley. Appeal 2009-009642 Application 10/465,166 8 FINDINGS OF FACT Wallace teaches that "[t]he various areas of each transparent cel which are to appear as color are painted with an opaque paint" (Wallace, p. 253), and that "[p]ure white areas represent fully transparent pixels, while areas of pure black represent fully opaque pixels" (id. at 257). ANALYSIS The Examiner makes the following conclusions and findings. [A]t the time of the invention, it would have been obvious to a person of ordinary skill in the art use a white opaque ribbon to cover the selected area when creating a page overlay, in order to mask existing information within the selected area so that new or updated information could subsequently be provided within the same area (page 254 paragraph titled "A. Computer- Assistance in the Cell Coloring Process (Step 5)). (Supp. Ans. 10.) "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). More specifically, "when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar Appeal 2009-009642 Application 10/465,166 9 devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. Here, the Examiner merely relies on Wallace to teach the age-old process of hiding text by covering it with an opaque substance. Such a process is at least as old as 1966 with the introduction of "Wite-Out WO-1 Erasing Liquid, which was the first 'For Copies' fluid that worked on photostatic copying paper." BiCÂ® Wite-OutÂ® Brand, History, http://www.wite-out.com/history/ (copy attached). We find that using an opaque substance to cover text as taught by Wallace would have involved nothing more that the combination of familiar elements according to known methods to yield predictable results and, thus, would have been obvious. The Appellants argue that "[w]hile it may (or may not) be possible to create a new margin using an opaque paint process, none of the three references explicit mention or suggest the desirability of such a use." (Reply to Supp. Ans. 3.) "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way." KSR, 550 U.S. at 419. Therefore, we conclude that the Examiner did not err in combining teachings of Wallace with those of Huang and Dooley. DECISION We affirm the rejections of claim1 and 8 and of claims 2-4, 6, 9-19, 21, and 23-30, which fall therewith. Appeal 2009-009642 Application 10/465,166 10 No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED llw LAW OFFICE OF GERALD MALISZEWSKI P.O. BOX 270829 SAN DIEGO, CA 92198-2829 Attachment Evidence Appendix BiCÂ® Wite-OutÂ® Brand, History, http://www.wite-out.com/history/. Application/Control No. 10/465,166 Applicant(s)/Patent Under Reexamination Larry Lee Feldman et al. Notice of References Cited Examiner James Debrow Art Unit 2100 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U BiCÂ® Wite-OutÂ® Brand, History, http://www.wite-out.com/history/. V W X *A copy of this reference is not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. Delete Last PagelAdd A Page The origin of Wite-OutÂ®; Brand correction fluid can be traced back to two individuals: a clerk in an insurance company and a gentleman who worked with chemicals as a basement waterproofer. 1966 Wite-Out Brand correction fluid had its beginnings in 1966, in Washington D.C., thanks to the ingenuity of George Kloosterhouse and Edwin Johanknecht. An insurance company clerk, Mr. Johanknecht needed a correction fluid that would work on photostatic paper, which was most commonly used for photocopying. When applied to photostatic paper, correction fluids on the market caused the writing to smudge or bleed. This resulted in messy corrections. Mr. Kloosterhouse teamed up with Edwin Johanknecht who, as a basement waterproofer, was experienced in working with chemicals. They introduced their first product, Wite-Out WO-1 Erasing Liquid, which was the first "For Copies" fluid that worked on photostatic copying paper. In 1971, they incorporated their business as Wite-Out Products, Inc. From 1966 to 1981, the company sold correction fluids that were water-based. These products offered a unique feature; they were "washable," meaning you could rub a small amount of water over a correction you had already made and start over again. While the early Wite-Out correction fluids were of high quality, they dried too slowly and didn't work on a variety of applications, such as typewritten copy, or pen and ink. 1981 In 1981, Archibald Douglas bought Wite-Out Products, Inc. and became its chairman. Under his direction, the company introduced faster-drying, solvent-based fluids. 1990 In July 1990, the company revolutionized the industry with the introduction of For EverythingÂ® Correction Fluid. Effective for all applications-typewritten, handwritten, copied or faxed-For Everything Correction Fluid eliminates the need for three application-specific bottles and thinner fluid. In addition, For Everything Correction Fluid does not contain chemicals known to deplete the ozone layer. 1992 In June 1992, Wite-Out Products, Inc. was acquired by BIC Corporation, the leading manufacturer and distributor of writing instruments in the U.S. 1994 Two years later, in January 1994, BIC launched four new Wite-Out Brand correction fluid products, including Wite-Out For Everything - Quick Dry; Wite-Out For Everything - Extra Coverage; Wite-Out For Everything - Super Smooth and Wite-Out Water Base. All four products come in specially designed easy-to-use bottles featuring vibrant, color-coded packaging. Each vibrant, color-coded product represents a customized unique formulation. 1997 In September 1997, BIC announced it was launching Wite-Out Brand correction tape, a newer, cleaner, faster way to make corrections. Unlike a bottled correction fluid or pen, BIC Wite-Out correction tape glides on smooth and dry and provides clean, precise, instant corrections. The tape comes in a handy, portable, see-through dispenser, which fits easily into the hand and corrects with a sideways action - much like a highlighter. Wite-Out Brand Correction Tape began selling in stores in Spring 1998. 1999 In October 1999, BIC introduced the correction fluid "Foam Applicator." The innovative foam applicator provides neater, more precise corrections. The foam applicator allows the user to make smooth, flowing corrections that are cleaner and easier to write-over. 2001 In 2001, BIC introduced another key player in the Wite-Out Brand family of correction products with the launch of the Shake 'n Squeezeâ„¢ correction pen. The Shake 'n Squeeze correction pen is a squeezable correction pen that offers a soft-squeeze barrel. A fine, needle-point tip for precise corrections. With all the benefits Shake 'n Squeeze has to offer combined with a competitive price point, BIC has a winner in its hands. Page 1 of 2Welcome to the BIC Wite-OutÂ® website 12/1/2010http://www.wite-out.com/history/ 2002 In 2002, BIC introduced two new correction products to the Wite-Out Brand family, the Exact LinerÂ® and Correction Film in a compact dispenser. Great for use in the office, school and home, both of these correction products are film-based, which allows for an easy, smooth lay down, resulting in precise corrections. These products dry instantly and leave no shadow effects, allowing the user to immediately write-over the corrected area. The Correction Film in a compact dispenser features a protective cap for easy portability, while the Exact LinerÂ® products hold like a pen for a comfortable correcting experience. Both the Exact Liner and the compact dispenser correction film products, are available at retail and office supply stores throughout the U.S. 2006 In 2006, two new correction products were introduced by BIC, the BIC Wite-Out brand BIGWheelÂ® Correction Tape and the DeleteOTM Correction Tape. The BIC Wite-Out BIGWheelÂ® Correction Tape is the first correction tape to feature wheels to guide application for a smooth and precise lay down of the correction tape. The DeleteOTM Correction Tape with a comfort grip can be held in 3 different positions for a comfortable experience while making corrections. Future BIC Wite-Out Brand strives to be the correction brand of choice among consumers, offering a complete line of correction products. We will continue to introduce innovative products that address the needs of our consumers, and provide easy-to-use correction products that consumers can trust to get the job done. Mistakes beware! Correction Fluids | Correction Tapes | Correction Pens | History | FAQ's | How to use them | MSDS | Games | Home Copyright Â© 2004, 2006 BIC USA Inc. and/or it's parent, subsidary and affiliated companies. All rights reserved. | Privacy Policy | User Agreement E-mail the webmaster with website inquiries. Site designed and created by The Worx Group. Page 2 of 2Welcome to the BIC Wite-OutÂ® website 12/1/2010http://www.wite-out.com/history/